Appeal No. 2004-2028
Application No. 09/423,746
fundamental question dispositive of an obviousness-type double
patenting rejection is whether or not any claim in the application
defines merely an obvious variation of an invention claimed in the
commonly owned prior patent. In re Vogel, 422 F.2d 438, 441, 164
USPQ 619, 622 (CCPA 1970). An analysis employed in an obviousness-
type double patenting is analogous to that used in a 35 U.S.C.
§ 103 obviousness determination.5 In re Longi, 759 F.2d 887, 892
n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985).
Here, Fagiolini ‘567 recites in its claim 1 as follows:
1. Process for purification of smoke containing hydrogen
chloride, which comprises the steps of introducing into
the smoke a powdery reactive composition comprising at
least 99% by weight sodium bicarbonate and at most 1% by
weight sodium monocarbonate and exhibiting a particle
size distribution defined by an average particle diameter
of from 0.020 to 0.030 mm and a particle size slope of
from 1 to 3, and subjecting the smoke to dust removal.
Thus, Fagiolini ‘567 recites every limitation recited in claim 1 of
the present application, except for a caking inhibitor “comprising
lignite coke and/or a magnesium compound selected from the group
consisting of magnesium oxide, magnesium hydroxide, mixtures of
magnesium oxides and magnesium hydroxide and magnesium
5 In certain circumstances, a so-called “two-way” obviousness analysis is required
between the application claims and the commonly owned patent claims (i.e., to sustain an
obviousness-type double patenting rejection, both the application claims and the commonly
owned patent claims must be obvious from each other). In re Goodman, 11 F.3d 1046, 1053, 29
USPQ2d 2010, 2016 (Fed. Cir. 1993). However, the appellants have not argued in the Brief that
the “two-way” obviousness analysis applies in the current situation.
5
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